Nothing lost in translation: book’s Spanish version is not a different creative work

In a precedential opinion (In re Douglas Wood (Serial 88388841 (TTAB, 15 August 2023) (Adlin, Larkin, English, ATJs)), the USPTO’s TTAB  has upheld an examiner’s refusal to register a trademark on the ground that the proposed mark was the title of a single creative work and therefore did not function as a trademark.

Background

Douglas Wood sought to register the standard-character mark ‘church boy to millionaire’ for goods ultimately identified as “Books in the field of faith-based coaching, personal development, motivational and inspirational topics; books in the nature of memoirs; books about personal development; printed matter in the field of personal development, namely, books, booklets, curricula, newsletters, magazines, printed periodicals”. Since the title of a single book cannot be registered as a trademark, Wood stated that the proposed mark was used on two separate books: an English-language book titled Church Boy to Millionaire and a Spanish-language book titled De Chico de Iglesia a Millonario. According to Wood, he published two books under different titles that had been marketed under the same mark, as evidenced by use on his website.

Deliberations and decisions

The examining attorney refused registration, finding that the mark was the title of a single creative work and thus did not function as a trademark. Wood appealed.

The board determined that Church Boy to Millionaire was the title of a single work, and that the book’s Spanish translation did not qualify as a separate work that might create a series entitled to trademark protection. It explained that “[t]he title of a single creative work, such as a book, is not considered to be a trademark, and is therefore unregistrable”. The board further differentiated trademarks from copyrights, explaining that “[u]nlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name”.

Wood argued that Church Boy to Millionaire and its Spanish translation, De Chico de Iglesia a Millonario, were different works since the choice of translator had a significant impact on the version created. The board explained that the issue was whether the content “has change[d] significantly” in translation. While it acknowledged that translators can employ their unique skills and cultural understanding to produce different content for a book in another language, the examining attorney showed that Wood did not provide any evidence of significant difference in content between the Spanish version and the English version. On the contrary, the evidence of use contradicted Wood’s position that the Spanish translation featured different content: his website’s links directed customers to “get the book today” and to “get the book in Spanish”, which effectively confirmed that two versions of the book featured the same content.

Looking ahead

The board accepted the possibility that a translation could conceivably produce different content that might rise to the level of a registrable second or subsequent edition of a book, but found that the content of the book at issue here did not so qualify. It thus affirmed the refusal to register.